10836077 (P.T.A.B. Feb. 27, 2014)

Ex Parte Amaitis et al

Patent Trial and Appeal BoardFeb 27, 2014

10836077 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LEE M. AMAITIS and JOSEPH M. ASHER ____________________ Appeal 2011-003586 Application 10/836,077 Technology Center 3700 ____________________ Before JOHN C. KERINS, LYNNE H. BROWNE, and PATRICK R. SCANLON, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003586 Application 10/836,077 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-39, 42, 43, and 61 under 35 U.S.C. § 103(a) as being unpatentable over Muir (US 2004/0166942 A1, pub. Aug. 26, 2004) and Sarno (US 6,024,641, iss. Feb. 15, 2000). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention relates to “systems and methods for wagering based on financial market indicators.” Spec. 1, ll. 2-3. Claims 1, 17, and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A wagering system, comprising: at least one controller-configured to: identify a period of time; receive an indication of a bet after identifying the period of time, in which the bet is associated with a time; if a first financial market indicator is available, obtain a value of at least one digit of the first financial market indicator, in which the value includes a value that occurs at the moment when the period of time has passed after the time associated with the bet; if the first financial market indicator is available, determine a first value for a first reel of a slot machine based at least in part upon the value of the at least one digit of the first financial market indicator; determine a second value for a second reel of the slot machine; Appeal 2011-003586 Application 10/836,077 3 determine the outcome of the bet based at least in part upon the first value, and the second value; and provide an indication of the outcome. ANALYSIS Regarding independent claims 1, 17, and 23, the Examiner finds that Muir discloses gaming methods and systems that use a pseudo-random number generating program but fails to disclose “determining values based at least in part on a financial market indicator.” Ans. 4-5. The Examiner finds that Sarno discloses using a financial market indicator to obtain random values and proposes modifying Muir by replacing the pseudo- random number with Sarno’s actual random number generator, “thereby making it less likely that people are . . . able to predict the numbers generated.” Ans. 5-6. Appellants raise several arguments in response to this rejection, including that Muir and Sarno “teach away from being combined with each other.” App. Br. 10. Specifically, Appellants note that Muir discloses “a system in which random numbers are pre-calculated and sent to gaming consoles controlled by a game provider before games at those gaming consoles are played in order to speed up response time by eliminating delays caused by generating and communicating such random numbers during game play.” App. Br. 11. Appellants note that Sarno, in contrast, discloses a system “that provides games in which the outcomes are based on random data determined after game play has finished by a source other than a game provider.” Id. at 12. For similar reasons, Appellants argue that the proposed modification renders Muir unsatisfactory for its purpose (App. Br. 13-14) and changes the principle of operation of Muir (App. Br. 14-16). Appeal 2011-003586 Application 10/836,077 4 A primary objective of Muir is “speeding up the response time of games played over a network, beyond that achievable using traditional systems.” Muir, para. [0002]. As noted by Appellants, this objective is accomplished by “[s]ending the random number which will be used to determine game or gamble outcomes to the console 12 prior to the player making their selection.” App. Br. 11 (quoting Muir, para. [0060]). This approach of using predetermined outcomes effectively eliminates communication delay because “[w]hen the player makes a selection the random numbers are already available at the console 12 and the game outcome can be determined and displayed immediately.” Muir, para. [0060]; see also id. at Abstract. It would not have been obvious to one of ordinary skill to modify Muir by replacing the predetermined outcomes with Sarno’s random values obtained from post-bet financial market data because such modification would have destroyed Muir’s intended purpose of quickening response time. See Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (finding that where a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed modification would not have been obvious). Furthermore, Sarno discloses using post-bet financial market data because it is publically available information that can be independently verified by individual players. Sarno, col. 2, ll. 43-45; col. 10, ll. 10-14. One of ordinary skill would not consider using publically available information to generate predetermined outcomes as disclosed by Muir. We also agree with Appellants’ argument that the Examiner does not provide an adequate rationale for combining Muir and Sarno. App. Br. 16- Appeal 2011-003586 Application 10/836,077 5 17. As noted supra, the Examiner contends that replacing Muir’s pseudo- random number generator with Sarno’s actual random number generator would reduce the predictability of the numbers generated. This rationale appears to rely on the premise that the random numbers generated by Muir’s pseudo-random number algorithm are inherently less random than Sarno’s random numbers. The Examiner, however, does not provide any support for this premise. We note that Muir discloses using “[c]ryptographically strong, unbiased pseudo-random number generators” (Muir, para. [0273]), which suggests that the pseudo-random number generators are not particularly predictable. For the above reasons, the Examiner has not articulated adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to make the proposed modification. We thus do not sustain the rejection of independent claims 1, 17, and 23, or of claims 2- 16, 18-22, 24-39, 42, 43, and 61 depending therefrom. DECISION We reverse the decision of the Examiner rejecting claims 1-39, 42, 43, and 61. REVERSED Klh